ANSWER: (C) is the most correct answer. See MPEP § 706.07(b). (A) is incorrect because a final rejection is not proper on a second action if it includes a rejection on newly cited art other than information submitted in an information disclosure statement under 37 CFR 1.97(c). MPEP § 706.07(a). (B) is incorrect because it is improper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the parent application. MPEP § 706.07(b). (D) is incorrect because it is improper to make final a first Office action in a substitute application where that application contains material, which was presented in the earlier application after final rejection, or closing of prosecution but was denied entry because the issue of new matter was raised. MPEP § 706.07(b). (E) is incorrect because (C) is correct.
Q) Reply to a Second Action Final Rejection (10.03.15a)
Recent test takers report question #15 from the October 2003 (am) exam is in the Patent Bar database of tested questions.
15. A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?
(A) An amendment canceling all rejected claims and complying with 37 CFR 1.116.
(B) Only a Notice of Appeal.
(C) The appropriate fee for a request for continued examination (RCE).
(D) A continued prosecution application (CPA) under 37 CFR 1.53(d).
(E) All of the above.
Previous post: Q) Antisense Technology (10.03.14a)
Next post: Q) Overcoming a Rejection based on 102(e) (10.03.39a)
This answer set is just plain wrong. (C) is not the right answer. (A) is the CORRECT answer. Here is the correct question and answer set.
15. A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?
(A) An amendment canceling all rejected claims and complying with 37 CFR 1.116.
(B) Only a Notice of Appeal.
(C) The appropriate fee for a request for continued examination (RCE).
(D) A continued prosecution application (CPA) under 37 CFR 1.53(d).
(E) All of the above.
15. ANSWER: (A) is the most correct answer. The filing of an amendment complying with 37 CFR § 1.116 is a proper reply under 37 CFR § 1.113 to a final rejection. See MPEP § 714.13, under the heading “Entry Not A Matter of Right,” which states, in pertinent part , “A reply under 37 CFR 1.113 is limited to: (A) an amendment complying with 37 CFR 1.116.” (B) is not the most correct answer because the Notice of Appeal must be accompanied by the appeal fee required by 37 CFR § 1.17(b). (C) is not the most correct answer because the RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111). (D) is not the correct answer because CPA practice does not apply to utility or plant applications if the prior application has a filing date on or after May 29, 2000. See MPEP § 706.07(h), paragraphs I and IV. (E) is not the correct answer since (A) is a proper reply.
Peter is right, per my PLI material the correct answer is – (A).
I’m confused about C. According to MPEP 201.06(d) the CPA practice for utility and plant applications ended on July 14, 2003, not November 29, 2000. It specifically says “CPAs filed prior to July 14, 2003 will continue to be processed and examined under the procedure set forth in 37 CFR 1.53(d).” It states the same in 706.07(h). C would still be wrong because it doesn’t include fees, but can someone explain to me why a CPA wouldn’t be allowed as long as the fee is filed?
(A) is correct. Given the fact pattern presented, there is nothing to suggest that the final rejection is improper, thus getting the app in condition for allowance is the right choice.
(C) is incorrect since it does not address the outstanding action.
I agree – A is the right answer
A is correct. RCE requires submission.
I understand but for answer for this question in 2003 is given as (C) correct answer. I am therefore little confused.
I am sorry it is (A) do not know how i misread (banging head)
I should learn to read the comments before sweating my way through wrong answers on here!! Wish they could be edited!!
Had this verbatim.